Acquisition of Online Apparel Ecommerce Business, Related IP Assets
Represented an investment firm client in the acquisition at auction of an online specialty retailer’s ecommerce business and related intellectual property assets, including trademarks and domain names, as well as merchandise and other assets. Transaction included negotiating asset purchase agreement, participating in bankruptcy negotiations, review of IP contracts, negotiating of loan document, conducting diligence of IP, as well as transition agreement for continued operation of ecommerce websites and onboarding of IP portfolio.
Substantial ITC Settlement for Semiconductor Client in Section 337 Investigation
Represented semiconductor industry client in in International Trade Commission (ITC) Section 337 investigation directed at the importation of mobile processors incorporating client’s patented integrated circuit features. Three-week trial resulted in substantial settlement to client.
General Exclusion Order (GEO) for Client in ITC Section 337 Investigation
Represented manufacturer of LED light arrays used in photography and video studios in Section 337 investigation directed at the importation of camera- and tripod-mounted LED arrays sourced from a variety of respondents. Trial resulted in the rare issuance of a general exclusion order (GEO). Worked with U.S. Customs officials to enforce GEO and seize infringing articles at ports of entry.
Favorable ITC Settlement for Designer, Manufacturer in Section 337 Investigation
Represented designer and manufacturer of digital microphone and noise-reduction products used in voice-driven applications including in ITC Section 337 investigation directed at the importation of devices incorporating directional microphone arrays and associated software. Resolved matter on the eve of trial with favorable settlement to client.
Representation of Largest Publicly Traded Private Equity Firm in the U.S. in IP Portfolio Evaluation
Represented the largest U.S. publicly traded private equity firm and other investors in evaluating and securing intellectual property portfolios for acquisitions and investments in companies operating in the energy and technology industries.
Successful Defense of Game-Changing Technology for Agricultural Manufacturer
Successfully defended game-changing agricultural equipment patents before the USPTO during reexamination related to a pending infringement suit in which the major manufacturer is the plaintiff.
Filed Trademarks for Retirement Plan Provider in Naming of Major Sports Stadium
Served as IP counsel to a retirement plan provider related to their involvement in purchasing naming rights to a major U.S. sports stadium. Provided counsel on and filed for trademark protection of names and logos following multi-year deal.
Risk Analysis for Use of Celebrity's Name and Likeness in Literary Work
Provided analysis and recommendations regarding liability risk associated with use of a famous celebrity's name and likeness in an original literary work. The project included an in-depth review of the legal concepts of right of publicity, invasion of privacy, misappropriation, false light and defamation.
Advised on Patent Matters Related to Automotive Technologies
Advised in-house counsel on patent-related matters, including noninfringement and invalidity analyses of competitor patents. Prepared and prosecuted patent applications directed to variety of automotive technologies including automotive manufacturing, infotainment systems, electric vehicle (EV) charge controllers, audio systems, suspension systems and other mechanical systems.
Counsel to Worldwide Leader in the Payments Technology Industry
Counseled worldwide leader in the payments technology industry across a variety of practice areas in connection with technology development and licensing, and payment processing service offerings.
Developed, Executed Patent Filing Strategy Central to Multimillion-Dollar Acquisition for Client
Developed and executed patent filing strategy resulting in patent family that was central to multimillion-dollar acquisition by large, publicly traded fluidics systems and specialty engineered products company.
Domestic and Foreign Patent Strategy and Portfolio Management for Agricultural Equipment Company
Developed and executed domestic and foreign patent filing strategy and management of patent portfolio related to precision agricultural equipment, including the development of offensive and defensive patent filing strategies.
Drafted Sales Promotions for Retail Client's Brands
Drafted and assisted in the successful implementation of various promotions, including social media-based sweepstakes, photo contests, and other advertising campaigns, in an effort to bring more visibility to and consumer interaction with the client's brands.
EPA Clearance for Large, Global Chemical Producer
Managed multiple EPA clearance searches and analyses for one of the largest international chemical producers in the world.
Filed University's First Ever Patent Applications
Filed the first ever patent applications for a university client. Worked with the university to create and implement internal intellectual property procedures for the client.
Inter Partes Review for Multinational Security Company
Handled four different inter partes reviews for multinational company specializing in security and identity solutions.
IP Agreements for Health Client Entering Third-Party Partnerships
Prepared various IP-related agreements including licenses, commercialization and joint development agreements, enabling client to successfully enter into partnerships with third parties.
IP Due Diligence in Business Acquisitions
Led the IP due diligence team in the successful acquisition of at least six animal care products businesses, resulting in the addition of hundreds of trademarks, patents, copyrights and domain names to the client's IP portfolio.
IP Due Diligence Review for Billion-Dollar Fragrance, Flavors Company
Managed large IP due diligence review for a billion-dollar fragrance and flavors company leading up to a significant acquisition.
Managed International Patent Portfolio for Health Care Company
Managed U.S. and international patent portfolio related to heart pumps, cardiac catheters, electrocardiograms, heart mapping, heart monitoring and ablation therapy technologies.
Management of U.S. and Foreign Patent Families for Major Medical Device Companies
Managed multiple U.S. and foreign patent families and provided strategic counsel for medical device companies involving technologies related to fluorescent imaging, vascular occlusion, neuromodulation, and renal and cardiovascular devices.
Outside Counsel for Global Rental Car Business
Served as outside legal counsel to a global leader in the rental car business in connection with technology development, software licensing and telecom services.
Patent Portfolio Management for Multinational Aerospace Corporation
Managed patent applications relating to semiconductors, avionics, antennas, modeling, simulation, non-destructive testing, flight control systems, communication systems, electronics, and unmanned systems.
Patent Preparation and Prosecution for Leading-Edge Technologies
Prepared and prosecuted patent applications on leading-edge technologies developed by research institutes, including new imaging and diagnostic methodologies for detecting diseases and monitoring treatment progresses.
Pharmaceutical Patent Portfolio for University
Managed pharmaceutical patent portfolio that includes filings in over 16 different countries. Worked with university and licensee on achieving patent protection worldwide.
Portfolio Management, Strategic Direction for Multiple Consumer Products, Health Care Companies
Managed global patent portfolios for and provided strategic counsel to multimillion-dollar consumer products and health care companies in the U.S. and abroad, including preparation and prosecution, opinion work, Inter Partes Review work and litigation.
Prosecuted Patent Applications for Large University Client
Drafted and prosecuted patent applications relating to medical imaging technologies including CT, MRI, optical tomography and image processing.
Successful Chemical Plant Clearance
Cleared all chemical engineering processes and related products for a major chemical plant in the U.S. for one of the largest international chemical producers in the world.
U.S. National Applications for Multibillion-Dollar Foreign Clients
Managed the filing and prosecution of extensive U.S. National (371) applications for a number of multibillion-dollar foreign clients. Armstrong Teasdale represents clients based in China, Japan, Singapore, the United Kingdom, Germany, Australia and many other countries.
Due Diligence for Multinational Chemical Company
Managed significant due diligence project for multinational chemical company. The project included clearing the client's product through a freedom-to-operate opinion and also identifying any potentially problematic references owned by competitors.
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